Lite Breeze, Inc.v.Venator Group Retail, Inc.

Trademark Trial and Appeal Board

Jun 29, 1999

No. 91099389 (T.T.A.B. Jun. 29, 1999)

Hearing: Paper No.
January 29, 1998 HANAK/md
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JUNE 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Lite Breeze, Inc.
v.
Venator Group Retail, Inc. (formerly
Kinney Shoe Corporation).
_____
Opposition No. 99,389
to application Serial No. 74/801,684
filed on July 13, 1992.
_____
Peter K. Kahn of Luce, Forward, Hamilton & Scripps for Lite,
Breeze, Inc.
Martin F. Majestic and J. Suzanne Siebert of Majestic,
Parsons, Siebert & Hsue for Venator Group Retail, Inc.
______
Before Cissel, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Venator Group Retail, Inc. (Venator or applicant) seeks
to register THE ZONE and design in the form shown below for
“men’s and women’s clothing, specifically t-shirts, sweat
shirts and underwear.” This “child” application was
originally part of a “parent” application (Serial No.
Opposition No. 99,389
2
74/293,422) filed on July 13, 1992 by Peter DePlacido, who
subsequently changed his name to Peter Deep (Deep). As
originally filed, the “parent” application listed the
following goods and services: “Pharmaceutical –- condoms,
adult toys”; “entertainment –- bars, discos, book stores,
sex clubs”; and “men’s and women’s clothing, specifically t-
shirts, sweat shirts, underwear.” As to all of the goods
and services in the “parent” application, Mr. Deep claimed
that the mark was first used anywhere and in commerce which
the U.S. Congress may regulate on June 1, 1991.
On January 31, 1994 Mr. Deep’s attorney filed a request
that the men’s and women’s clothing, specifically t-shirts,
sweat shirts and underwear be “divided out” of the “parent”
application. This request was granted by the PTO on March
16, 1994 and the application to register THE ZONE and design
for “men’s and women’s clothing, specifically t-shirts,
Opposition No. 99,389
3
sweat shirts and underwear” was assigned application Serial
No. 74/801,684 (the “child” application).
Between January 31, 1994 and March 16, 1994, Mr. Deep
assigned on February 9, 1994 all of his rights in the mark
THE ZONE and design as well as the “parent” application
Serial No. 74/293,422 to Sports, Inc. Subsequently, Sports,
Inc. assigned the mark THE ZONE and design as well as the
“child” application Serial No. 74/801,684 to Venator, which
was then known as Kinney Shoe Corporation.
On October 16, 1995 Lite Breeze, Inc. (Lite Breeze or
opposer) filed a notice of opposition against the “child”
application (Serial No. 74/801,684). Lite Breeze alleged
that prior to any use of the mark THE ZONE and design by the
owner of application Serial No. 74/801,684, Lite Breeze used
its mark IN THE ZONE on shorts, t-shirts, tank tops, sweat
shirts and sweat pants. Continuing, Lite Breeze alleged
that the use and registration of THE ZONE and design by the
owner of application Serial No. 74/801,684 would result in
confusion, mistake and deception. In addition, in paragraph
5 of the notice of opposition, Lite Breeze made the
following allegation: “Opposer [Lite Breeze] believes that
applicant [then Kinney Shoe Corporation] has not made actual
or constructive use of the mark THE ZONE prior to July 22,
1992.”
Opposition No. 99,389
4
Venator (then Kinney Shoe) filed an answer which denied
the pertinent allegations of the notice of opposition.
Both Venator and Lite Breeze have filed extensive
briefs and were represented by counsel at a hearing held on
January 29, 1998.
The record in this case includes, among other things,
the testimony of Mr. Deep, David Knepprath (an owner of a
printing company who did work for Mr. Deep), Dean Wolf (a
former employee in the law firm representing Venator), Adam
Tachner (an attorney and a former summer clerk at Venator’s
law firm) and Rodd A. Garner (president of Lite Breeze).
Both Lite Breeze and Venator are now in agreement that
the contemporaneous use of IN THE ZONE and THE ZONE and
design for clothing is likely to result in confusion. See
Venator’s brief page 4 and Venator’s response to Lite
Breeze’s request for admission no. 3. We too agree that
confusion is likely.
The parties are in further agreement that one issue
before this Board is priority of use, namely, whether Lite
Breeze first used IN THE ZONE or whether Venator through its
predecessors in interest (Sports, Inc. and Mr. Deep) first
used THE ZONE and design. According to applicant Venator,
“this case can be very simply decided since the sole issue
presented by the pleadings is whether opposer [Lite Breeze]
Opposition No. 99,389
5
has shown by a preponderance of the evidence that it has
priority of use.” (Venator’s brief page 4).
Lite Breeze, while agreeing that this is one of the
issues in this proceeding, also argues that there are two
additional issues, namely, whether (1) the application was
void from the very beginning because as of the application
of filing date (July 13, 1992) Mr. Deep (Venator’s
predecessor in interest) had not made any trademark use of
THE ZONE and design, and whether (2) applicant and its
predecessors in interest have abandoned the mark THE ZONE
and design. (Lite Breeze’s brief pages 10 and 11).
With regard to the purported issue of abandonment, it
is Lite Breeze’s contention that “there is no evidence in
the record of any sales of clothing bearing the mark THE
ZONE and design by any party after 1993. Accordingly,
because there is no evidence that the [opposed] mark was
used in 1994, 1995 or 1996, the [opposed] mark has
presumptively been abandoned.” (Lite Breeze’s page 31).
We find that abandonment was not pled, nor was it tried
by the consent of the parties. Moreover, we note that in
his cross-examination of Mr. Deep, counsel for Lite Breeze
questioned Mr. Deep extensively about his use of the mark
THE ZONE and design during the years 1991, 1992 and 1993.
However, Lite Breeze’s counsel, for whatever reason, did not
elect to question Mr. Deep regarding use of the mark THE
Opposition No. 99,389
6
ZONE and design by himself or anyone else during the years
1994 and 1995. (Deep deposition pages 194-195).
Accordingly, we will give no consideration to the purported
issue of abandonment.
However, we find that the issue of whether the “child”
application was void from the beginning due to Mr. Deep’s
failure to use the mark THE ZONE and design prior to the
application filing date was pled in the notice of opposition
(perhaps somewhat awkwardly) and was clearly tried by the
consent of the parties. As previously noted, paragraph 5 of
the notice of opposition reads as follows: “Opposer
believes that applicant has not made any actual or
constructive use of the mark THE ZONE prior to July 22,
1992.” Of course, the application filing date for both the
parent and the child application is July 13, 1992. In its
brief, Venator acknowledges that it was well aware of the
significance of paragraph 5, as witnessed by the following
sentences taken from page 6 of Venator’s brief:
“Nevertheless, applicant as an exercise of caution did take
testimony so as to establish that its predecessor [Mr. Deep]
had actually used the subject mark in interstate commerce
prior to the July 13, 1992 filing date. This was done since
paragraph 5 of the Notice of Opposition might suggest that
opposer was seeking to have the Board view the subject
application itself …” Moreover, at the oral hearing counsel
Opposition No. 99,389
7
for Venator conceded that the issue of whether the
application was void as of the filing date of July 13, 1992
was tried by the consent of the parties.
Turning to the issue of priority of use, we begin our
analysis by considering when opposer Lite Breeze first used
its mark IN THE ZONE for clothing. Mr. Garner (president of
Lite Breeze) testified that Lite Breeze –- a company based
in San Diego, California –- first used its mark IN THE ZONE
on t-shirts when it sold sixty of such shirts to Divers
Sports Center of Manteno, Illinois on June 22, 1992. Mr.
Garner testified that neither Lite Breeze nor he had any
ownership interest in or other relationship with Divers
Sport Center other than that of supplier and customer.
(Garner deposition pages 10-11). Mr. Garner further
testified that Lite Breeze had been continuously selling
clothing bearing the mark IN THE ZONE from June 22, 1992 to
the date of his deposition, namely, July 30, 1996. (Garner
deposition pages 13 –14).
Mr. Garner’s testimony contained no inconsistencies and
it was supported by considerable documentary evidence. This
evidence included approximately 100 invoices showing sales
of IN THE ZONE clothing for each of the years 1992, 1993,
1995 and 1996. In addition, the documentary evidence
included color pictures of approximately 10 different styles
of shirts bearing the mark IN THE ZONE. Moreover, not only
Opposition No. 99,389
8
did Lite Breeze introduce copies of its own catalogs which
featured shirts, caps and shorts bearing the mark IN THE
ZONE, but in addition, opposer made of record third-party
literature which depicted the mark IN THE ZONE on
applicant’s t-shirts and which offered said t-shirts for
sale. One such piece of third-party literature was produced
by the sponsors of The Fall Classic baseball tournament held
at the Prince William [Virginia] Stadium Complex on October
2, 3 and 4 1992. (Opposer’s exhibit 8).
In short, Mr. Garner’s clear and consistent testimony
supported by substantial documentary evidence convinces us
that Lite Breeze has made continuous use of its mark IN THE
ZONE in connection with clothing since June 22, 1992.
At this point one matter deserves clarification. At
pages 4-6 of its brief, Venator argues that Lite Breeze’s
earliest first use date cannot be prior to July 22, 1992
because Lite Breeze admitted Venator’s request for
admissions nos. 1-3, which, in essence, ask that opposer
Lite Breeze admit that it did not make use of IN THE ZONE or
ZONE before July 22, 1992. Lite Breeze’s “admissions” were
served on Venator on January 25, 1996.
On June 13, 1997 opposer filed a motion to correct its
responses to Venator’s request for admission nos. 1-3. In
this regard, it is noted that Venator’s brief arguing that
Lite Breeze is bound to a first use date of no earlier than
Opposition No. 99,389
9
July 22, 1992 was served by first class mail on Lite
Breeze’s counsel on May 29, 1997. In support of its motion
to correct its responses to request for admissions 1-3, Lite
Breeze attached the declaration of its counsel Peter K. Hahn
who stated that he “mistakenly misread the requests and
believed the critical date referred to in the requests to be
June 22, 1992, not July 22, 1992” and that he “first became
aware that [he] had misread the critical dates in the
requests for admission when [he] read the applicant’s brief
[served by mail on May 29, 1997].” Lite Breeze points out
in its motion to correct that in the very same document in
which it answered request for admissions 1-3, it also
answered Venator’s interrogatory no. 4, in part, as follows:
“To the extent the interrogatory is understood, opposer
[Lite Breeze] identifies Lite Breeze, Inc. Invoice No. 1229,
dated June 22, 1992, in response to customer order No.
PO#158 for the shipment 60 ‘IN THE ZONE t-shirts with
blocked logo’ for sales to customer in Manteno, Illinois.”
(emphasis added).
Opposer’s motion to correct its answers to request for
admissions nos. 1-3 is hereby granted. We grant the motion
primarily for the following reason. As previously noted,
opposer Lite Breeze served its responses to request for
admissions nos. 1-3 as well as its response to interrogatory
no. 4 in the same paper dated January 25, 1996.
Opposition No. 99,389
10
Approximately six months later Mr. Garner’s testimony
deposition was taken on July 30, 1996. Venator’s counsel –-
Martin F. Majestic –- was present at that deposition. On
direct examination, Mr. Garner testified as follows at page
9:
Q. Okay. If we can start talking a
little bit about your use of the
mark and when that was initiated.
Do you remember when you made your
first sale of a clothing product
bearing the mark IN THE ZONE?
A. The first sale was made on June
22nd, 1992. The actual sale may
have taken place a week or ten days
earlier. But the shipping date
would be June 22nd of ’92.
After that question and answer, the invoice identified
in Lite Breeze’s response to Venator’s interrogatory no. 4
was marked as exhibit 2 and introduced into evidence. Said
invoice clearly bore the date June 22, 1992 in the upper
right hand corner, and, as previously noted, it reflected
the sale by Lite Breeze of sixty IN THE ZONE t-shirts to
Divers Sports Center of Manteno, Illinois. Thereafter, Mr.
Majestic extensively cross-examined Mr. Garner. Indeed, the
cross-examination filled over 100 pages of deposition
transcript. However, not once did Mr. Majestic in any
manner whatsoever inquire of Mr. Garner as to the
discrepancy between his testimony that Lite Breeze first
used the mark IN THE ZONE at least as early as June 22, 1992
Opposition No. 99,389
11
and Lite Breeze’s responses to Venator’s request for
admissions 1-3, which requests used the date July 22, 1992.
Indeed, in his extensive questioning of Mr. Garner, Mr.
Majestic never asked questions that in any way probed the
accuracy or veracity of Mr. Garner’s claim that Lite Breeze
first used its mark IN THE ZONE at least as early as June
22, 1992. Primarily because of Mr. Majestic’s conduct
during the deposition of Mr. Garner, we hereby grant Lite
Breeze’s motion to correct its answers to Venator’s request
for admissions 1-3.
We note that in its papers in opposition to Lite
Breeze’s motion to correct, Venator makes much of the fact
that Lite Breeze’s motion to correct was not filed until
after the trial in this case had been concluded. However,
what Venator fails to note is that its counsel had the full
opportunity to cross-examine Mr. Garner on any purported
inconsistency between the dates of June 22, 1992 and July
22, 1992 when Mr. Garner’s testimony deposition was taken on
July 30, 1996, approximately six months after Lite Breeze
erroneously answered Venator’s request for admissions 1-3.
Moreover, it cannot be said that Mr. Majestic would have
been totally surprised by the testimony of Mr. Garner given
the fact that in the very same paper in which it erroneously
answered opposer’s request for admissions 1-3, Lite Breeze
also answered in response to interrogatory no. 4 that it
Opposition No. 99,389
12
first used its mark IN THE ZONE on June 22, 1992. In short,
confronted with the clear and consistent testimony of Mr.
Garner which was backed by substantial documentation showing
continuous sales of IN THE ZONE t-shirts by Lite Breeze
since at least as early as June 22, 1992, Mr. Majestic
elected to simply remain silent.
In any event, whether we find Lite Breeze’s first use
date of IN THE ZONE to be June 22, 1992 or July 22, 1992 is
of no consequence because, as we will explain next, the
record does not demonstrate that Venator’s predecessor Mr.
Deep made any trademark use of THE ZONE and design on any
clothing prior to either of the foregoing two dates.
We now turn to an analysis of when Mr. Deep, Venator’s
predecessor in interest, first used the applied for mark THE
ZONE and design. As previously noted, applicant Venator has
relied upon the testimony of four individuals: Peter Deep,
David Knepprath, Adam Tachner and Dean Wolf. The testimony
of Mr. Tachner and Mr. Wolf, while quite interesting,
relates entirely to events occurring after 1992 and thus has
no bearing on the issues of priority of use or whether the
opposed application was void from the beginning for failure
to make use of the applied for mark on or before the filing
date of July 13, 1992. Thus, applicant Venator’s claim of
priority rests entirely upon the testimony of Mr. Deep and
the stipulated testimony of David Knepprath contained in a
Opposition No. 99,389
13
two page declaration. Because Mr. Knepprath was called as a
testimonial witness by applicant Venator, we presume that
his two page declaration was carefully scrutinized by
counsel for Venator.
To cut to the quick, we find that Mr. Deep’s actions in
connection with his efforts to register THE ZONE and design
coupled with his statements and demeanor in his deposition
demonstrate that said deposition testimony is simply lacking
in credibility. As for Mr. Knepprath’s stipulated
testimony, we note that in reality, said testimony not only
does not support Venator’s contention that, through its
predecessor Mr. Deep, it was the first to use the mark THE
ZONE and design, but in addition, the stipulated testimony
of Mr. Knepprath undermines the testimony of Mr. Deep.
We turn now to the stipulated testimony of Mr.
Knepprath. Mr. Knepprath testified that he is the owner of
a t-shirt printing company and that one of his customers is
Mr. Deep. Mr. Knepprath testified that he located two
invoices reflecting sales of t-shirts from himself to Mr.
Deep. One of the invoices had an order date of January 24,
1992 and the other invoice had an order date of March 18,
1993. Mr. Knepprath’s testimony is quite interesting in
that he states that Mr. Deep placed orders for t-shirts
having either one of two marks, namely, ZONE per se or THE
ZONE. Mr. Knepprath then goes on to note that the January
Opposition No. 99,389
14
24, 1992 order was for t-shirts bearing the mark ZONE per
se, and not the mark THE ZONE, much less the applied for
mark, namely, THE ZONE and design. Mr. Knepprath then
states that the order of March 18, 1993 (long after Lite
Breeze’s well established first use date) was for t-shirts
“having as project designation ‘The Zone.’” On at least two
other occasions in his stipulated testimony, Mr. Knepprath
made distinctions between orders from Mr. Deep when the mark
requested was, on some occasions, ZONE per se and was, on
other occasions, THE ZONE. Of course, inasmuch as Mr.
Knepprath’s declaration was presumably very carefully
reviewed by Venator’s counsel, his repeated distinction
between the marks ZONE per se and THE ZONE is quite telling.
Moreover, nowhere in his declaration did Mr. Knepprath state
that he ever prepared and sold to Mr. Deep t-shirts bearing
the applied for mark, namely, THE ZONE and design.
Thus, not only does Mr. Knepprath’s testimony regarding
the sale on January 24, 1992 of t-shirts to Mr. Deep bearing
the mark ZONE per se not support any use by Mr. Deep of the
mark THE ZONE and design, but in addition it contradicts Mr.
Deep’s sworn testimony that it was the mark THE ZONE which
appeared on the t-shirts which came as a result of the
January 24, 1992 order. (Deep deposition page 14).
However, even more damaging to Venator’s position is
the fact that the invoice for the January 24, 1992 order
Opposition No. 99,389
15
reflects that Mr. Knepprath charged Mr. Deep sales tax,
whereas the invoice for the much later order of March 19,
1993 reflects that Mr. Knepprath did not charge Mr. Deep
sales tax. In its brief, Venator never takes issue with
Lite Breeze’s contention at page 23 of its brief “that the
January 1992 purchase invoice indicates the shirts were not
for resale by showing the sale to be taxable.” Mr. Deep
testified that he did not know what percentage of the t-
shirts that he ordered “were given to [his] employees for
[use as] uniforms.” (Deep deposition page 87). Had Mr.
Deep truly been selling t-shirts bearing the mark ZONE in
January 1992, it is surprising that he would elect to pay a
sales tax when apparently even counsel for Venator concedes
that he did not have to. A more plausible explanation is
that THE ZONE or ZONE t-shirts delivered to Mr. Deep in 1991
and 1992 were for use by employees of Mr. Deep’s private
men’s sex club called THE ZONE located on Sycamore Street in
Los Angeles. (Deep deposition page 71). In short, we find
that the stipulated testimony of Mr. Knepprath offered by
applicant Venator not only does not support the proposition
that Mr. Deep ever used the applied for mark THE ZONE and
design on any type of apparel, but that in addition, the
stipulated testimony of Mr. Knepprath actually contradicts
portions of Mr. Deep’s testimony.
Opposition No. 99,389
16
Before concluding our discussion of Mr. Knepprath’s
testimony, one final comment is in order. While Venator
argued (correctly) that the issue of abandonment was neither
pled or tried, out of caution it discussed the merits of
this claim at pages 19-25 of its brief. At page 23 of its
brief, Venator argued that because Lite Breeze failed to
answer request for admission no. 10, Lite Breeze admitted
that “the mark IN THE ZONE for clothing is not a material
alteration in character of the mark THE ZONE for clothing.”
In essence, Venator is arguing that it can “tack” Venator’s
own much later use of IN THE ZONE on to Mr. Deep’s purported
earlier use of THE ZONE.
Because Venator has raised the question of “tacking”
(albeit in another context) and because Venator may wish to
appeal this Board’s decision, we will explain that should it
be found that Mr. Deep used the mark ZONE per se or even THE
ZONE prior to June 22, 1992 or July 22, 1992 that such uses
cannot be tacked onto the later use by Mr. Deep (if any) of
the applied for mark, namely, THE ZONE and design. In order
to tack the use of an earlier mark onto the use of the
applied for mark, “the previously used mark must be the
legal equivalent of the mark in question or
indistinguishable therefrom, and the consumer should
consider both as the same mark.” Van Dyne-Crotty Inc. v.
Wear-Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed.
Opposition No. 99,389
17
Cir. 1991). It has been repeatedly stated that the
“tacking” of the use of one mark onto the use of a second
mark for the purposes of establishing priority has only been
permitted in “rare instances.” American Paging Inc. v.
American Mobilphone Inc., 13 USPQ2d 2036, 2038 (TTAB 1989),
aff’d 17 USPQ2d 1726 (Fed. Cir. 1990). We find that neither
the mark ZONE per se or even the mark THE ZONE are the legal
equivalents of or indistinguishable from the applied for
mark, namely, THE ZONE and design. Not only are the words
in the applied for mark depicted in a decidedly stylized
format, but in addition, the applied for mark has a
prominent design element beneath the words consisting of a
thick line running the entire length of the words. The word
marks ZONE per se and THE ZONE are clearly distinguishable
from the applied for mark, and neither is the legal
equivalent of the applied for mark.
We now turn to a consideration of the testimony of Mr.
Deep. This testimony was given in San Francisco on October
16, 1996 and in Eugene, Oregon on October 29, 1996. In both
San Francisco and Eugene, Mr. Deep was represented by his
own counsel, and not counsel for Venator. However, Mr. Deep
conceded that he was being reimbursed for the fees of his
counsel. (Deep deposition page 139).
Throughout his deposition, Mr. Deep displayed an
extremely cavalier attitude; a very poor memory; and made
Opposition No. 99,389
18
numerous flippant comments. For example, when asked if
Venator (then Kinney Shoe) would reimburse him for his
expenses in attending the deposition, Mr. Deep’s answer was
as follows: “There’s hope, there’s dreams, you know.”
(Deep deposition page 110). Mr. Deep was then admonished by
his own counsel to give counsel for Lite Breeze “a straight
answer.” At that point Mr. Deep stated as follows: “Yes,
they [Kinney] have offered to reimburse me.” Mr. Deep’s
counsel then stated as follows: “I know you [Mr. Deep] were
kidding around, but he [Lite Breeze’s counsel] needs a
straightforward answer.” (Deep deposition page 111). Later
in his deposition, Mr. Deep’s counsel stated as follows:
“Let me withdraw that flippant comment [made by Mr. Deep].”
(Deep deposition pages 207-208). As another example, Mr.
Deep acknowledged that he was required to have a resale
license in order to sell clothing from his private men’s
club called THE ZONE. (Deep deposition page 161). When
asked if there was such a resale permit, Mr. Deep replied as
follows: “It’s my belief that they [the club] did. And if
they didn’t, whoop-de-doo.” (Deep deposition page 162).
Moreover, Mr. Deep repeatedly showed a hostile attitude
towards perfectly legitimate questions put to him by counsel
for Lite Breeze. Mr. Deep accused Lite Breeze’s counsel of
being “childish.” (Deep deposition page 186). Furthermore,
in response to another legitimate question posed by Lite
Opposition No. 99,389
19
Breeze’s counsel, Mr. Deep shot back as follows: “You know,
why don’t you get your facts straight and call me back.” At
this point Mr. Deep’s counsel -– exhibiting extreme patience
and respect for this Board –- stated: “Mr. Deep, please –-
please.” (Deep deposition page 239).
As troubling as Mr. Deep’s flippant and discourteous
attitude is, even more troubling was the fact that Mr. Deep
repeatedly equivocated in his answers. We will not attempt
to even begin to repeat the numerous equivocations made by
Mr. Deep. To say the least, Mr. Deep had repeated lapses of
memory. When asked questions as to when he used the applied
for mark in connection with clothing, a typical response of
Mr. Deep was as follows: “I don’t know anything for sure.”
(Deep deposition page 174).
Most shocking of all, Mr. Deep could not even recall
“what entity actually owned and sold the t-shirts from the
location at THE ZONE, the Sycamore location,” nor could he
recall “which company had a resale license prior to August
of 1993.” (Deep deposition page 114). It must be
remembered that the parent application seeking to register
THE ZONE and design was filed in the name of Peter
DePlacido, now Peter Deep. However, in his October 1996
deposition Mr. Deep could not state that it was he
personally who made sales of t-shirts or had a resale
license prior to August 1993. Mr. Deep testified that he
Opposition No. 99,389
20
simply did not know which entity made the sales or had the
resale license. Mr. Deep speculated that it could have been
such companies as 2 Peters Company, Community Investment
Corporation, Deep Entertainment, Horizon Sound or, to use
Mr. Deep’s own words, “could have been anything.” (Deep
deposition page 114). This is particularly telling because
even if we assume that some entity(s) sold t-shirts bearing
the applied for mark in 1991 or 1992 at the private men’s
club called THE ZONE, Mr. Deep’s application to register the
mark THE ZONE and design would be void from the beginning
unless it was Mr. Deep personally who made such sales or
unless it was a licensee of Mr. Deep who made such sales.
As troubling as Mr. Deep’s attitude and lack of
recollection are, the most troubling aspect of Mr. Deep’s
testimony is its lack of candor. On June 10, 1991 Peter
Deep (then Peter DePlacido) signed the parent application
seeking to register THE ZONE and design for, as initially
described, “pharmaceutical -- condoms, adult toys”;
“entertainment –- bars, discos, book stores, sex clubs”; and
“men’s and women’s clothing, specifically t-shirts, sweat
shirts, underwear.” (emphasis added). Mr. Deep signed the
declaration with the warning “that willful false statements
and the like so made are punishable by fine or imprisonment,
or both, under 18 U.S.C. 1001.” However, on cross-
examination, Mr. Deep acknowledged that he never used the
Opposition No. 99,389
21
mark THE ZONE and design in connection with a bar, a disco
or a book store. (Deep deposition page 77). Moreover, even
more pertinent to the “child” application, Mr. Deep
acknowledged that he never used the applied for mark THE
ZONE and design on sweat shirts, despite the fact that the
application, after listing men’s and women’s clothing,
specifically singled out sweat shirts, along with t-shirts
and underwear. (Deep deposition page 99).
In addition, in his trademark and service mark
application (the parent application), Mr. Deep declared that
he used the applied for mark THE ZONE and design anywhere
and in interstate commerce on June 1, 1991. However, on
direct examination, Mr. Deep acknowledged that he did not
even place an order for t-shirts bearing the mark THE ZONE
until June 10, 1991. (Deep deposition page 10).
Furthermore, on cross-examination, Mr. Deep explicitly
acknowledged that he had never used the applied for mark on
any type of clothing on June 1, 1991. (Deep deposition page
100). Indeed, Mr. Deep acknowledged that the private men’s
club known as THE ZONE where Mr. Deep allegedly made his
first sales of t-shirts bearing the applied for mark did not
even open until July 27, 1991. (Deep deposition page 12).1

1 On November 27, 1996 (after Mr. Deep’s October 1996
deposition), counsel for Venator filed a paper seeking to amend
the “child” application to assert a first use date of the applied
for mark of “at least as early as July 27, 1991”; to assert a
first use date of the applied for mark in commerce of “at least
Opposition No. 99,389
22
Mr. Deep’s false statements in connection with the
“parent” (and hence “child”) application did not end with
the initial application papers. In the initial application
papers, Mr. Deep claimed that he was using the applied for
trademark THE ZONE and design by placing it on labels for
his clothing. In the first office action, the Examining
Attorney noted that there were no labels submitted and that
“the applicant must submit three specimens of use for each
class; these specimens must be of a type which were in use
at least as early as the filing date of the application
[July 13, 1992].” Mr. Deep’s previous attorney handling
this “parent” application responded to the Examining
Attorney in a letter dated April 1, 1993. With regard to
the labels for Mr. Deep’s clothing, the previous attorney
stated to the Examining Attorney that “another order of the
clothing labels are again in a process of being
manufactured. Upon receipt of those labels, we will forward
the requisite number of specimens to your office.” In a
subsequent letter dated April 12, 1993 Mr. Deep’s previous
attorney submitted the label specimens for the Class 25
goods (clothing). These labels bear the applied for mark
THE ZONE and design and they have a PTO mail room stamp

as early as May 1992”; and to delete from the Class 25 apparel
items “sweat shirts.” Should Venator prevail on appeal, this
uncontested amendment is accepted and the registration will issue
with the aforementioned new first use dates and with the goods
Opposition No. 99,389
23
showing the date of April 16, 1993. Mr. Deep’s previous
attorney also submitted the April 2, 1993 affidavit of Mr.
Deep. In that affidavit, Mr. Deep once again falsely stated
that “the mark, ‘The Zone’, was in use as early as June 1,
1991.” In addition, Mr. Deep stated that the “substitute
specimens … were in use in commerce at least as early as the
filing date of the original application [July 13, 1992].”
Thus, if Mr. Deep’s affidavit is truthful there had to be at
least two occasions on which Mr. Deep had prepared clothing
labels bearing the applied for mark. The first occasion had
to be prior to the application filing date of July 13, 1992.
The second occasion had to be in the spring of 1993 because
in her April 1, 1993 letter to the Examining Attorney, Mr.
Deep’s former attorney stated that “another order of the
clothing labels are again in the process of being
manufactured.” However, in his deposition testimony, Mr.
Deep stated unequivocally that he was sure that he placed
only one order for clothing labels bearing the applied for
mark THE ZONE and design. (Deep deposition page 84-85).
Thus, either Mr. Deep was untruthful in his affidavit filed
in connection with the “parent” application or Mr. Deep was
untruthful in his deposition testimony.
In sum, we find Mr. Deep to be a witness who is
flippant and disrespectful to Board proceedings; who has an

reading simply as follows: “men’s and women’s clothing, namely,
Opposition No. 99,389
24
extremely faulty memory; and who is simply untruthful.
Accordingly, we accord no weight to the testimony of Mr.
Deep for the purposes of establishing that priority of use
rests in Venator’s favor or for the purposes of establishing
that the applied for mark (THE ZONE and design) was in use
as of the application filing date. Thus, we find in favor
of Lite Breeze both on the issue of priority of use and on
the issue of whether the application was void from the
beginning. Moreover, as previously noted, Mr. Deep’s
testimony is contradicted by the stipulated testimony of Mr.
Knepprath prepared by counsel for Venator.
Finally, we wish to comment upon the fact that during
the course of Mr. Deep’s deposition some documents were
introduced as exhibits which purported to show use of the
applied for mark in 1991 and 1992. The first are four
purchase orders bearing in the upper left hand corner “David
K’s [Knepprath’s] t-shirt printing.” (Deep exhibits 13-16).
There are two problems with these purchase orders. First,
they do not show that the t-shirts ordered had affixed to
them the applied for mark, namely, THE ZONE and design.
Second, the first three purchase orders predating Lite
Breeze’s first use date of June 22, 1992 reflect that Mr.
Knepprath charged Mr. Deep sales tax. As previously
explained, this indicates that the shirts ordered by Mr.

t-shirts and underwear.”
Opposition No. 99,389
25
Deep were not for resale. The fourth purchase order bears
an order date of June 29, 1992 and a delivery date of July
6, 1992 and in the box marked “tax” there appears for the
first time the word “resale.” Of course, both the order
date and the delivery date of this fourth purchase order are
subsequent to Lite Breeze’s first use date of its mark IN
THE ZONE, namely, June 22, 1992.
The second group of documents bears the words
“financial summary sheet” and they are dated February 8,
1992; March 6, 1992; March 16, 1992; and March 19, 1992.
(Deep exhibits 22-25). In their totality, these four
financial summaries purport to show the sale of but five t-
shirts. Again, there are a number of problems with these
financial summary sheets. First, they do not show that the
five t-shirts purportedly sold had affixed to them the
applied for mark THE ZONE and design. Second, these
financial summary sheets were prepared by Mr. Deep in his
own handwriting, and thus are dependent upon the veracity of
Mr. Deep, which is lacking. Finally, despite the fact that
Lite Breeze had requested that such documentation be
provided during discovery, Mr. Deep miraculously uncovered
these four financial summary sheets showing a grand total of
five t-shirts being sold prior to June 22, 1992 (or July 22,
1992) just two or three days before the commencement of his
deposition on October 16, 1996. (Deep deposition page 27).
Opposition No. 99,389
26
Hence, we are granting Lite Breeze’s request that they be
excluded inasmuch as they were not produced during
discovery. Moreover, as previously noted, even if were to
consider them, these financial summary sheets are totally
dependent upon Mr. Deep’s veracity, which in and of itself
is totally lacking.
Before leaving that issue of documentation, we wish to
note that Venator never introduced into evidence specimens
of clothing bearing the mark THE ZONE and design.
One final note is in order. This Board rarely
challenges the veracity of a witness to the extent we have
with regard to Mr. Deep’s testimony. This is because by the
very nature of Board proceedings, Administrative Trademark
Judges are unable to observe the actual testimony itself,
and thus cannot judge the demeanor of the witness. However,
for the reasons exhaustively outlined above, we find that
Mr. Deep’s flippant and disrespectful attitude coupled with
his frequent purported lapses of memory and untruthful
statements place us in a rare position to say that his
testimony carries virtually no weight.
Opposition No. 99,389
27
Decision: We find in favor of Lite Breeze both on the
issue of priority of use and on the issue that the opposed
“child” application was void from the beginning inasmuch as
there was no use of the applied for mark THE ZONE and design
as of the application filing date of July 13, 1992.
R. F. Cissel
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial and
Appeal Board